IP Law Daily Continuation was properly filed on date of issuance of parent application
Tuesday, June 21, 2016

Continuation was properly filed on date of issuance of parent application

By Linda O’Brien, J.D., LL.M.

A continuing application may be "filed before the patenting" of the earlier application when both the filing and patenting occur on the same day, the U.S. Court of Appeals for the Federal Circuit has decided. Thus, the district court’s grant of summary judgment in favor of the defendants was reversed and remanded (Immersion Corporation v. HTC Corporation, June 21, 2016, Taranto, R.).

In January 2000, Immersion Corporation filed a patent application with the U.S. Patent and Trademark Office disclosing a mechanism for providing haptic feedback to users of electronic devices. The application was issued as U.S. Patent No. 6,429,846 ("the '846 patent") in August 2002. Immersion filed International Application No. PCT/US01/01486, which was published as WO 01/54109 in July 2001. The written description of the publication was materially identical to that of the '846 patent. Under 35 U.S.C. §102(b), the WO '109 publication became invalidating as to claims to the subject matter disclosed in that publication unless those claims were entitled to an effective filing date before July 2002.

In August 2002, Immersion filed a series of applications that shared the written description of the '846 patent and for which Immersion asserted entitlement to an effective filing date of January 2000, the filing date of the '846 patent application. Immersion invoked 35 U.S.C. §102 which allows multiple links of "continuing" applications in a chain leading back to an earlier application as long as each link meets the section requirements. One of Immersion’s applications matured into U.S. Patent No. 7,148,875 ("the '875 patent") in August 2002 on the same day that the '846 patent was issued. Immersion filed additional applications that were continuations of the '875 patent application, each filed at least one day before its predecessor application was patented. That process led to the issuance of three patents—U.S. Patent No. 7,982,720 ("the '720 patent"), U.S. Patent No. 8,031,181 ("the '181 patent"), and U.S. Patent No. 8,059,105 ("the '105 patent")—which all share a written description with the WO '109 publication.

In 2012, Immersion filed suit against HTC Corporation and HTC America, Inc. for infringing the '720 patent, '181 patent, and '105 patent. HTC sought summary judgment that the asserted patent claims were invalid because the WO '109 publication of July 2001 disclosed the subject matter of those claims. In February 2015, the district court held that the '875 patent’s application was not "filed before the patenting" of the '846 patent’s application within the meaning of 35 U.S.C. §102 since they were filed on the same day. Immersion appealed.

Section 120 provides that an application for a patent for an invention disclosed in a previously filed application shall have the same effect as to such invention as though filed on the date of the prior application, if filed before the patenting of the first application, the court explained. Although the language of the statute requires that the later application be "filed before the patenting" of the earlier application, the language does not state that the unit of time is a day. However, the adoption of a day as the unit of time for deciding if filing is "before" patenting is supported by the prevalence of date-based usage elsewhere in the statute, the court noted.

Additionally, before the enactment of Section 120 in the 1952 Patent Act, the U.S. Supreme Court in Godfrey v. Eames, 68 U.S. 317 (1864) established the basis for same-day continuations for priority-date purposes, according to the court. Since the Godfrey decision, the Supreme Court, other federal courts, and the USPTO have consistently followed the Godfrey rule, the court stated.

The court next looked to the 1952 Patent Act, which the court noted was the first statute to put continuation practice into statutory text. The legislative history or contemporaneous commentary accompanying the bill did not indicate any intent to change Godfrey’s long-established rule of approving same-day continuations for priority-date purposes.

After the enactment of the Patent Act, the USPTO promulgated a regulation stating that "the benefit of the filing date of a prior application" can be obtained by filing an application claiming an invention disclosed in a prior filed copending application. The term "copending" on its face naturally includes the same-day situation, in the court’s view. Moreover, the agency in its Manual of Patent Examining Procedure defined "copending" by repeating the language of Section 120 and set forth the agency’s practice concerning same-day filing and patenting.

According to the court, HTC’s contention—that the continuing application has to be filed at least one day before the earlier application was contrary to over 50 years of public and agency reliance on the permissibility of same-day continuations. The repeated and consistent pre- and post-1952 judicial and agency interpretations in an area of evident public reliance were persuasive reasons to interpret Section 120 to preserve the established position of same-day continuation. Since Section 120 allows consideration of whether filing was before patenting within a single day, the judgment of the district court as to the '720 patent, '181 patent, and '105 patents must be reversed, the court concluded.

The case is No. 2015-1574.

Attorneys: Joseph R. Palmore (Morrison & Foerster LLP) for Immersion Corporation. Dan L. Bagatell (Perkins Coie LLP) for HTC Corporation and HTC America, Inc.

Companies: Immersion Corporation; HTC Corporation; HTC America, Inc.

MainStory: TopStory Patent FedCirNews

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